AI Summit_Sept. 13 2024

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insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art” ( Pannu factors). Courts have found that a failure to meet any one of these factors precludes that person from being named an inventor. [33] [34] As for the first Pannu factor, “[a] person who shares in conception of a claimed invention is a joint inventor of the invention.” In other words, each named inventor must have significantly contributed to the “definite and permanent idea of the complete and operative invention as it is thereafter applied in practice.” [35] [36] In addition to inventorship disputes, the courts have extensively addressed the issue of conception in connection with interference proceedings under pre-America Invents Act 35 U.S.C. 102(g) (https:// www.govinfo.gov/link/uscode/35/102), and the USPTO views that body of caselaw as instructive. In particular, interference proceedings involve determining the date of conception for competing inventions. That inquiry, in turn, requires determining what activities are sufficient for conception and by whom. In these decisions, the courts have recognized there must be a contemporaneous recognition and appreciation of the invention for there to be conception. Put simply, conception does not occur when there is only an “unrecognized accidental creation.” While recognition and appreciation are generally required for complete conception, there is no requirement that each inventor recognize and appreciate the invention. Therefore, each inventor must make a significant contribution to the conception of the invention, and at least one inventor must have recognition and appreciation. [37] [38] [39] [40] The fact that a human performs a significant contribution to reduction to practice of an invention conceived by another is not enough to constitute inventorship. It is settled law that such contributions are insufficient to demonstrate inventorship. Although the first Pannu factor refers to “the conception or reduction to practice of the invention,” the court did so by citing an earlier Federal Circuit decision concerning “the doctrine of simultaneous conception and reduction to practice.” Pursuant to that doctrine, “in some instances, an inventor may only be able to establish a conception by pointing to a reduction to practice through a successful experiment.” This concept of simultaneous conception and reduction to practice is sometimes pertinent in unpredictable arts, where, for example, the inventor does not have a reasonable expectation that they would produce the claimed invention. Under those circumstances, the conception of a specific chemical compound does not occur until the reduction to practice occurs. Therefore, the reference to reduction to practice in the first Pannu factor is simply an acknowledgement of this doctrine, and it does not imply that reduction to practice is sufficient for invention or is a substitute for conception. [41] [42] [43] [44] [45] In the context of AI-assisted inventions, natural person(s) who create an invention using an AI system, or any other advanced system, must contribute significantly to the invention, as specified by the Pannu factors. Although the Pannu factors are generally applied to two or more people who create an invention ( i.e., joint inventors), it follows that a single person who uses an AI system to create an invention is also required to make a significant contribution to the invention, according to the Pannu factors, to be considered a proper inventor. [46] There is no requirement for a named inventor to contribute to every claim in an application or patent; a contribution to a single claim is sufficient. However, each claim must have been invented by at least one named inventor. In other words, a natural person must have significantly contributed to each claim in a patent application or patent. In the event of a single person using an AI system to create an invention, that single person must make a significant contribution to every claim in the patent or patent application. Inventorship is improper in any patent or patent application that includes a claim in which at least one [47] [48]

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AI Roundtable Page 16

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